Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)
Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)
Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)
1
86 S.Ct. 684
15 L.Ed.2d 545
After a lapse of 15 years, the Court again focuses its attention on the
patentability of inventions under the standard of Art. I, 8, cl. 8, of the
Constitution and under the conditions prescribed by the laws of the United
States. Since our last expression on patent validity, Great A. & P. Tea Co. v.
Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162
(1950), the Congress has for the first time expressly added a third statutory
dimension to the two requirements of novelty and utility that had been the sole
statutory test since the Patent Act of 1793. This is the test of obviousness, i.e.,
whether 'the subject matter sought to be patented and the prior art are such that
the subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived by the manner in which the
invention was made.' 103 of the Patent Act of 1952, 35 U.S.C. 103 (1964
ed.).
2
The questions, involved in each of the companion cases before us, are what
effect the 1952 Act had upon traditional statutory and judicial tests of
patentability and what definitive tests are now required. We have concluded
that the 1952 Act was intended to codify judicial precedents embracing the
principle long ago announced by this Court in Hotchkiss v. Greenwood, 11
How. 248, 13 L.Ed. 683 (1851), and that, while the clear language of 103
places emphasis on an inquiry into obviousness, the general level of innovation
necessary to sustain patentability remains the same.
I.
3The Cases.
4
(a). No. 11, Graham v. John Deere Co., an infringement suit by petitioners,
presents a conflict between two Circuits over the validity of a single patent on a
'Clamp for vibrating Shank Plows.' The invention, a combination of old
mechanical elements, involves a device designed to absorb shock from plow
shanks as they plow through rocky soil and thus to prevent damage to the plow.
In 1955, the Fifth Circuit had held the patent valid under its rule that when a
combination produces an 'old result in a cheaper and otherwise more
advantageous way,' it is patentable. Jeoffroy Mfg., Inc. v. Graham, 219 F.2d
511, cert. denied, 350 U.S. 826, 76 S.Ct. 55, 100 L.Ed. 738. In 1964, the Eighth
Circuit held, in the case at bar, that there was no new result in the patented
combination and that the patent was, therefore, not valid. 333 F.2d 529,
reversing D.C., 216 F.Supp. 272. We granted certiorari, 379 U.S. 956, 85 S.Ct.
652, 13 L.Ed.2d 553. Although we have determined that neither Circuit applied
the correct test, we conclude that the patent is invalid under 103 and,
therefore, we affirm the judgment of the Eighth Circuit.
(b). No. 37, Calmar, Inc. v. Cook Chemical Co., and No. 43, Colgate-Palmolive
Co. v. Cook Chemical Co., both from the Eighth Circuit, were separate
declaratory judgment actions, but were filed contemporaneously. Petitioner in
Calmar is the manufacturer of a finger-operated sprayer with a 'hold-down' cap
of the type commonly seen on grocers' shelves inserted in bottles of insecticides
Manifestly, the validity of each of these patents turns on the facts. The basic
problems, however, are the same in each case and require initially a discussion
of the constitutional and statutory provisions covering the patentability of the
inventions.
II.
7
At the outset it must be remembered that the federal patent power stems from a
specific constitutional provision which authorizes the Congress 'To promote the
Progress of * * * useful Arts, by securing for limited Times to * * * Inventors
the exclusive Right to their * * * Discoveries.' Art. I, 8, cl. 8.1 The clause is
both a grant of power and a limitation. This qualified authority, unlike the
power often exercised in the sixteenth and seventeenth centuries by the English
Crown, is limited to the promotion of advances in the 'useful arts.' It was
written against the backdrop of the practiceseventually curtailed by the
Statute of Monopoliesof the Crown in granting monopolies to court favorites
in goods or businesses which had long before been enjoyed by the public. See
Meinhardt, Inventions, Patents and Monopoly, pp. 3035 (London, 1946). The
Congress in the exercise of the patent power may not overreach the restraints
imposed by the stated constitutional purpose. Nor may it enlarge the patent
monopoly without regard to the innovation, advancement or social benefit
gained thereby. Moreover, Congress may not authorize the issuance of patents
whose effects are to remove existent knowledge from the public domain, or to
restrict free access to materials already available. Innovation, advancement, and
things which add to the sum of useful knowledge are inherent requisites in a
patent system which by constitutional command must 'promote the Progress of
* * * useful Arts.' This is the standard expressed in the Constitution and it may
not be ignored. And it is in this light that patent validity 'requires reference to a
standard written into the Constitution.' Great A. & P. Tea Co. v. Supermarket
Equipment Corp., supra, 340 U.S. at 154, 71 S.Ct. at 131 (concurring opinion).
Within the limits of the constitutional grant, the Congress may, of course,
implement the stated purpose of the Framers by selecting the policy which in its
judgment best effectuates the constitutional aim. This is but a corollary to the
grant to Congress of any Article I power. Gibbons v. Ogden, 9 Wheat. 1, 6
L.Ed. 23. Within the scope established by the Constitution, Congress may set
out conditions and tests for patentability. McClurg v. Kingsland, 1 How. 202,
206, 11 L.Ed. 102. It is the duty of the Commissioner of Patents and of the
courts in the administration of the patent system to give effect to the
constitutional standard by appropriate application, in each case, of the statutory
scheme of the Congress.
9
10
Thomas Jefferson, who as Secretary of State was a member of the group, was
its moving spirit and might well be called the 'first administrator of our patent
system.' See Federico, Operation of the Patent Act of 1790, 18 J.Pat.Off.Soc.
237, 238 (1936). He was not only an administrator of the patent system under
the 1790 Act, but was also the author of the 1793 Patent Act. In addition,
Jefferson was himself an inventor of great note. His unpatented improvements
on plows, to mention but one line of his inventions, won acclaim and
recognition on both sides of the Atlantic. Because of his active interest and
influence in the early development of the patent system, Jefferson's views on
the general nature of the limited patent monopoly under the Constitution, as
well as his conclusions as to conditions for patentability under the statutory
scheme, are worthy of note.
11
His views ripened, however, and in another letter to Madison (Aug. 1789) after
the drafting of the Bill of Rights, Jefferson stated that he would have been
pleased by an express provision in this form:
13
14
15
16
As a member of the patent board for several years, Jefferson saw clearly the
difficulty in 'drawing a line between the things which are worth to the public
the embarrassment of an exclusive patent, and those which are not.' The board
on which he served sought to draw such a line and formulated several rules
which are preserved in Jefferson's correspondence.3 Despite the board's efforts,
Jefferson saw 'with what slow progress a system of general rules could be
matured.' Because of the 'abundance' of cases and the fact that the
investigations occupied 'more time of the members of the board than they could
spare from higher duties, the whole was turned over to the judiciary, to be
matured into a system, under which every one might know when his actions
were safe and lawful.' Letter to McPherson, supra, at 181, 182. Apparently
Congress agreed with Jefferson and the board that the courts should develop
additional conditions for patentability. Although the Patent Act was amended,
revised or codified some 50 times between 1790 and 1950, Congress steered
clear of a statutory set of requirements other than the bare novelty and utility
tests reformulated in Jefferson's draft of the 1793 Patent Act.
III.
17
18
19
20
as to its meaning both in the Patent Office, in the courts, and at the bar. The
Hotchkiss formulation, however, lies not in any label, but in its functional
approach to questions of patentability. In practice, Hotchkiss has required a
comparison between the subject matter of the patent, or patent application, and
the background skill of the calling. It has been from this comparison that
patentability was in each case determined.
IV.
The 1952 Patent Act.
21
22
The Act sets out the conditions of patentability in three sections. An analysis of
the structure of these three sections indicates that patentability is dependent
upon three explicit conditions: novelty and utility as articulated and defined in
101 and 102, and nonobviousness, the new statutory formulation, as set out in
103. The first two sections, which trace closely the 1874 codification, express
the 'new and useful' tests which have always existed in the statutory scheme
and, for our purposes here, need no clarification.5 The pivotal section around
which the present controversy centers is 103. It provides:
23
24
'A patent may not be obtained though the invention is not identically disclosed
or described as set forth in section 102 of this title, if the differences between
the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived by the manner in which the
invention was made.' The section is cast in relatively unambiguous terms.
Patentability is to depend, in addition to novelty and utility, upon the 'nonobvious' nature of the 'subject matter sought to be patented' to a person having
ordinary skill in the pertinent art.
25
House Reports, S.Rep. No. 1979, 82d Cong., 2d Sess. (1952); H.R.Rep. No.
1923, 82d Cong., 2d Sess. (1952), U.S.Code Congressional and Administrative
News 1952, p. 2394, reflect this emphasis in these terms:
26
'Section 103, for the first time in our statute, provides a condition which exists
in the law and has existed for more than 100 years, but only by reason of
decisions of the courts. An invention which has been made, and which is new
in the sense that the same thing has not been made before, may still not be
patentable if the difference between the new thing and what was known before
is not considered sufficiently great to warrant a patent. That has been expressed
in a large variety of ways in decisions of the courts and in writings. Section 103
states this requirement in the title. It refers to the difference between the subject
matter sought to be patented and the prior art, meaning what was known before
as described in section 102. If this difference is such that the subject matter as a
whole would have been obvious at the time to a person skilled in the art, then
the subject matter cannot be patented.
27
'That provision paraphrases language which has often been used in decisions of
the courts, and the section is added to the statute for uniformity and
definiteness. This section should have a stabilizing effect and minimize great
departures which have appeared in some cases.' H.R.Rep., supra, at 7; S.Rep.,
supra, at 6.
28
It is undisputed that this section was, for the first time, a statutory expression of
an additional requirement for patentability, originally expressed in Hotchkiss. It
also seems apparent that Congress intended by the last sentence of 103 to
abolish the test it believed this Court announced in the controversial phrase
'flash of creative genius,' used in Cuno Engineering Corp. v. Automatic Devices
Corp., 314 U.S. 84, 62 S.Ct. 37, 86 L.Ed. 58 (1941).7
29
30
been followed since at least as early as 1850.' The note indicates that the
section was inserted because it 'may have some stabilizing effect, and also to
serve as a basis for the addition at a later time of some criteria which may be
worked out.' To this same effect are the reports of both Houses, supra, which
state that the first sentence of the section 'paraphrases language which has often
been used in decisions of the courts, and the section is added to the statute for
uniformity and definiteness.'
31
We believe that this legislative history, as well as other sources,9 shows that the
revision was not intended by Congress to change the general level of patentable
invention. We conclude that the section was intended merely as a codification
of judicial precedents embracing the Hotchkiss condition, with congressional
directions that inquiries into the obviousness of the subject matter sought to be
patented are a prerequisite to patentability.
V.
32
33
While the ultimate question of patent validity is one of law, Great A. & P. Tea
Co. v. Supermarket Equipment Corp., supra, 340 U.S. at 155, 71 S.Ct. at 131,
the 103 condition, which is but one of three conditions, each of which must be
satisfied, lends itself to several basic factual inquiries. Under 103, the scope
and content of the prior art are to be determined; differences between the prior
art and the claims at issue are to be ascertained; and the level of ordinary skill
in the pertinent art resolved. Against this background, the obviousness or
nonobviousness of the subject matter is determined. Such secondary
considerations as commercial success, long felt but unsolved needs, failure of
others, etc., might be utilized to give light to the circumstances surrounding the
origin of the subject matter sought to be patented. As indicia of obviousness or
nonobviousness, these inquiries may have relevancy. See Note, Subtests of
'Nonobviousness': A Nontechnical Approach to Patent Validity, 112
U.Pa.L.Rev. 1169 (1964).
34
This is not to say, however, that there will not be difficulties in applying the
nonobviousness test. What is obvious is not a question upon which there is
likely to be uniformity of thought in every given factual context. The
difficulties, however, are comparable to those encountered daily by the courts
in such frames of reference as negligence and scienter, and should be amenable
36
Although we conclude here that the inquiry which the Patent Office and the
courts must make as to patentability must be beamed with greater intensity on
the requirements of 103, it bears repeating that we find no change in the
general strictness with which the overall test is to be applied. We have been
urged to find in 103 a relaxed standard, supposedly a congressional reaction to
the 'increased standard' applied by this Court in its decisions over the last 20 or
30 years. The standard has remained invariable in this Court. Technology,
however, has advancedand with remarkable rapidity in the last 50 years.
Moreover, the ambit of applicable art in given fields of science has widened by
disciplines unheard of a half century ago. It is but an evenhanded application to
require that those persons granted the benefit of a patent monopoly be charged
with an awareness of these changed conditions. The same is true of the less
technical, but still useful arts. He who seeks to build a better mousetrap today
has a long path to tread before reaching the Patent Office.
VI.
37
39
This patent, No. 2,627,798 (hereinafter called the '798 patent) relates to a spring
clamp which permits plow shanks to be pushed upward when they hit
obstructions in the soil, and then springs the shanks back into normal position
when the obstruction is passed over. The device, which we show
diagrammatically in the accompanying sketches (Appendix, Fig. 1), is fixed to
the plow frame as a unit. The mechanism around which the controversy center
is basically a hinge. The top half of it, known as the upper plate (marked 1 in
the sketches), is a heavy metal piece clamped to the plow frame (2) and is
stationary relative to the plow frame. The lower half of the hinge, known as the
hinge plate (3), is connected to the rear of the upper plate by a hinge pin (4) and
rotates downward with respect to it. The shank (5), which is bolted to the
forward end of the hinge plate (at 6), runs beneath the plate and parallel to it for
about nine inches, passes through a stirrup (7), and then continues backward
for several feet curving down toward the ground. The chisel (8), which does the
actual plowing, is attached to the rear end of the shank. As the plow frame is
pulled forward, the chisel rips through the soil, thereby plowing it. In the
normal position, the hinge plate and the shank are kept tight against the upper
plate by a spring (9), which is atop the upper plate. A rod (10) runs through the
center of the spring, extending down through holes in both plates and the shank.
Its upper end is bolted to the top of the spring while its lower end is hooked
against the underside of the shank.
40
When the chisel hits a rock or other obstruction in the soil, the obstruction
forces the chisel and the rear portion of the shank to move upward. The shank
is pivoted (at 11) against the rear of the hinge plate and pries open the hinge
against the closing tendency of the spring. (See sketch labeled 'Open Position,'
Appendix, Fig. 1.) This closing tendency is caused by the fact that, as the hinge
is opened, the connecting rod is pulled downward and the spring is compressed.
When the obstruction is passed over, the upward force on the chisel disappears
and the spring pulls the shank and hinge plate back into their original position.
The lower, rear portion of the hinge plate is constructed in the form of a stirrup
(7) which brackets the shank, passing around and beneath it. The shank fits
loosely into the stirrup (permitting a slight up and down play). The stirrup is
designed to prevent the shank from recoiling away from the hinge plate, and
thus prevents excessive strain on the shank near its bolted connection. The
stirrup also girds the shank, preventing it from fishtailing from side to side.
41
Chisel plows, as they are called, were developed for plowing in areas where the
ground is relatively free from rocks or stones. Originally, the shanks were
rigidly attached to the plow frames. When such plows were used in the rocky,
glacial soils of some of the Northern States, they were found to have serious
defects. As the chisels hit buried rocks, a vibratory motion was set up and
tremendous forces were transmitted to the shank near its connection to the
frame. The shanks would break. Graham, one of the petitioners, sought to meet
that problem, and in 1950 obtained a patent, U.S. No. 2,493,811 (hereinafter
'811), on a spring clamp where solved some of the difficulties. Graham and his
companies manufactured and sold the '811 clamps. In 1950, Graham modified
the '811 structure and filed for a patent. That patent, the one in issue, was
granted in 1953. This suit against competing plow manufacturers resulted from
charges by petitioners that several of respondents' devices infringed the '798
patent. The Prior Art.
44
Five prior patents indicating the state of the art were cited by the Patent Office
in the prosecution of the '798 application. Four of these patents, 10 other United
States patents and two prior-use spring-clamp arrangements not of record in the
'798 file wrapper were relied upon by respondents as revealing the prior art. The
District Court and the Court of Appeals found that the prior art 'as a whole in
one form or another contains all of the mechanical elements of the 798 Patent.'
One of the prior-use clamp devices not before the Patent ExaminerGlencoe
was found to have 'all of the elements.'
45
We confine our discussion to the prior patent of Graham, '811, and to the
Glencoe clamp device, both among the references asserted by respondents. The
Graham '811 and '798 patent devices are similar in all elements, save two: (1)
the stirrup and the bolted connection of the shank to the hinge plate do not
appear in '811; and (2) the position of the shank is reversed, being placed in
patent '811 above the hinge plate, sandwiched between it and the upper plate.
The shank is held in place by the spring rod which is hooked against the bottom
of the hinge plate passing through a slot in the shank. Other differences are of
no consequence to our examination. In practice the '811 patent arrangement
permitted the shank to wobble or fishtail because it was not rigidly fixed to the
hinge plate; moreover, as the hinge plate was below the shank, the latter caused
wear on the upper plate, a member difficult to repair or replace.
46
Graham's '798 patent application contained 12 claims. All were rejected as not
distinguished from the Graham '811 patent. The inverted position of the shank
was specifically rejected as was the bolting of the shank to the hinge plate. The
Patent Office examiner found these to be 'matters of design well within the
expected skill of the art and devoid of invention.' Graham withdrew the original
claims and substituted the two new ones which are substantially those in issue
here. His contention was that wear was reduced in patent '798 between the
shank and the heel or rear of the upper plate.11 He also emphasized several new
features, the relevant one here being that the bolt used to connect the hinge
plate and shank maintained the upper face of the shank in continuing and
constant contact with the underface of the hinge plate.
47
Graham did not urge before the Patent Office the greater 'flexing' qualities of
the '798 patent arrangement which he so heavily relied on in the courts. The
sole element in patent '798 which petitioners argue before us is the
interchanging of the shank and hinge plate and the consequences flowing from
this arrangement. The contention is that this arrangementwhich petitioners
claim is not disclosed in the prior artpermits the shank to flex under stress for
its entire length. As we have sketched (see sketch, 'Graham '798 Patent' in
Appendix, Fig. 2), when the chisel hits an obstruction the resultant force (A)
pushes the rear of the shank upward and the shank pivots against the rear of the
hinge plate at (C). The natural tendency is for that portion of the shank between
the pivot point and the bolted connection (i.e., between C and D) to bow
downward and away from the hinge plate. The maximum distance (B) that the
shank moves away from the plate is slightfor emphasis, greatly exaggerated
in the sketches. This is so because of the strength of the shank and the short
nine inches or so length of that portion of the shank between (C) and (D). On
the contrary, in patent '811 (see sketch, 'Graham '811 Patent' in Appendix, Fig.
2), the pivot point is the upper plate at point (c); and while the tendency for the
shank to bow between points (c) and (d) is the same as in '798, the shank is
restricted because of the underlying hinge plate and cannot flex as freely. In
practical effect, the shank flexes only between points (a) and (c), and not along
the entire length of the shank, as in '798. Petitioners say that this difference in
flex, though small, effectively absorbs the tremendous forces of the shock of
obstructions whereas prior art arrangements failed.
We cannot agree with petitioners. We assume that the prior art does not
disclose such an arrangement as petitioners claim in patent '798. Still we do not
believe that the argument on which petitioners' contention is bottomed supports
the validity of the patent. The tendency of the shank to flex is the same in all
cases. If free-flexing, as petitioners now argue, is the crucial difference above
the prior art, then it appears evident that the desired result would be obtainable
by not boxing the shank within the confines of the hinge.12 The only other
effective place available in the arrangement was to attach it below the hinge
plate and run it through a stirrup or bracket that would not disturb its flexing
qualities. Certainly a person having ordinary skill in the prior art, given the fact
that the flex in the shank could be utilized more effectively if allowed to run the
entire length of the shank, would immediately see that the thing to do was what
Graham did, i.e., invert the shank and the hinge plate.
50
Petitioners' argument basing validity on the free-flex theory raised for the first
time on appeal is reminiscent of Lincoln Engineering Co. of Illinois v. StewartWarner Corp., 303 U.S. 545, 58 S.Ct. 662, 82 L.Ed. 1008 (1938), where the
Court called such an effort 'an afterthought. No such function * * * is hinted at
in the specifications of the patent. If this were so vital an element in the
functioning of the apparatus, it is strange that all mention of it was omitted.' At
p. 550, 58 S.Ct. at p. 665. No 'flexing' argument was raised in the Patent Office.
Indeed, the trial judge specifically found that 'flexing is not a claim of the
patent in suit * * *' and would not permit interrogation as to flexing in the
accused devices. Moreover, the clear testimony of petitioners' experts shows
that the flexing advantages flowing from the '798 arrangement are not, in fact, a
significant feature in the patent.13
51
We find no nonobvious facets in the '798 arrangement. The wear and repair
claims were sufficient to overcome the patent examiner's original conclusions
as to the validity of the patent. However, some of the prior art, notably
Glencoe, was not before him. There the hinge plate is below the shank but, as
the courts below found, all of the elements in the '798 patent are present in the
Glencoe structure. Furthermore, even though the position of the shank and
hinge plate appears reversed in Glencoe, the mechanical operation is identical.
The shank there pivots about the underside of the stirrup, which in Glencoe is
above the shank. In other words, the stirrup in Glencoe serves exactly the same
function as the heel of the hinge plate in '798. The mere shifting of the wear
point to the heel of the '798 hinge plate from the stirrup of Glencoeitself a
part of the hinge plate presents no operative mechanical distinctions, much less
nonobvious differences.
52 The Patent in Issue in No. 37, Calmar, Inc. v. Cook Chemical Co., and in No. 43,
B.
Colgate-Palmolive Co. v. Cook Chemical Co.
53
The single patent14 involved in these cases relates to a plastic finger sprayer
with a 'hold-down' lid used as a built-in dispenser for containers or bottles
packaging liquid products, principally household insecticides. Only the first
two of the four claims in the patent are involved here and we, therefore, limit
our discussion to them. We do not set out those claims here since they are
55
For many years manufacturers engaged in the insecticide business had faced a
serious problem in developing sprayers that could be integrated with the
containers or bottles in which the insecticides were marketed. Originally,
insecticides were applied through the use of tin sprayers, not supplied by the
manufacturer. In 1947, Cook Chemical, an insecticide manufacturer, began to
furnish its customers with plastic pump dispensers purchased from Calmar. The
dispenser was an unpatented finger-operated device mounted in a perforated
cardboard holder and hung over the neck of the bottle or container. It was
necessary for the ultimate consumer to remove the cap of the container and
insert and attach the sprayer to the latter for use.
58
Hanging the sprayer on the side of the container or bottle was both expensive
and troublesome. Packaging for shipment had to be a hand operation, and
breakage and pilferage as well as the loss of the sprayer during shipment and
retail display often occurred. Cook Chemical urged Calmar to develop an
During the same year Calmar was acquired by the Drackett Company. Cook
Chemical became apprehensive of its source of supply for pump sprayers and
decided to manufacture its own through a subsidiary, Bakan Plastics, Inc.
Initially, it copied its design from the unpatented Calmar sprayer, but an officer
of Cook Chemical, Scoggin, was assigned to develop a more efficient device.
By 1956 Scoggin had perfected the shipper-sprayer in suit and a patent was
granted in 1959 to Cook Chemical as his assignee. In the interim Cook
Chemical began to use Scoggin's device and also marketed it to the trade. The
device was well received and soon became widely used.
60
At the outset it is well to point up that the parties have always disagreed as to
the scope and definition of the invention claimed in the patent in suit. Cook
Chemical contends that the invention encompasses a unique combination of
admittedly old elements and that patentability is found in the result produced.
Its expert testified that the invention was 'the first commercially successful,
inexpensive integrated shipping closure pump unit which permitted automated
assembly with a container of household insecticide or similar liquids to produce
a practical, ready-to-use package which could be shipped without external
leakage and which was so organized that the pump unit with its hold-down cap
could be itself assembled and sealed and then later assembled and sealed on the
container without breaking the first seal.' Cook Chemical stresses the long-felt
need in the industry for such a device; the inability of others to produce it; and
its commercial successall of which, contends Cook, evidences the
nonobvious nature of the device at the time it was developed. On the other
hand, Calmar says that the differences between Scoggin's shipper-sprayer and
the prior art relate only to the design of the overcap and that the differences are
so inconsequential that the device as a whole would have been obvious at the
Both courts accepted Cook Chemical's contentions. While the exact basis of the
District Court's holding is uncertain, the court did find the subject matter of the
patent new, useful and nonobvious. It concluded that Scoggin 'had produced a
sealed and protected sprayer unit which the manufacturer need only screw onto
the top of its container in much the same fashion as a simple metal cap.' 220
F.Supp., at 418. Its decision seems to be bottomed on the finding that the
Scoggin sprayer solved the long-standing problem that had confronted the
industry.16 The Court of Appeals also found validity in the 'novel 'marriage' of
the sprayer with the insecticide container' which took years in discovery and in
'the immediate commercial success' which it enjoyed. While finding that the
individual elements of the invention were 'not novel per se' the court found
'nothing in the prior art suggesting Scoggin's unique combination of these old
features * * * as would solve the * * * problems which for years beset the
insecticide industry.' It concluded that 'the * * * (device) meets the exacting
standard required for a combination of old elements to rise to the level of
patentable invention by fulfilling the long-felt need with an economical,
efficient, utilitarian apparatus which achieved novel results and immediate
commercial success.' 336 F.2d, at 114.
64
Only two of the five prior art patents cited by the Patent Office Examiner in the
prosecution of Scoggin's application are necessary to our discussion, i.e., Lohse
U.S. Patent No. 2,119,884 (1938) and Mellon U.S. Patent No. 2,586,687
(1952). Others are cited by Calmar that were not before the Examiner, but of
these our purposes require discussion of only the Livingstone U.S. Patent No.
2,715,480 (1953). Simplified drawings of each of these patents are reproduced
in the Appendix, Figs. 46, for comparison and description.
65
66
The Mellon patent (Fig. 5), however, discloses the idea of effecting a seal
above the threads of the overcap. Mellon's device, likewise a shipper-sprayer,
differs from Scoggin's in that its overcap screws directly on the container, and a
gasket, rather than a rib, is used to effect the seal.
67
67
68
Let us first return to the fundamental disagreement between the parties. Cook
Chemical, as we noted at the outset, urges that the invention must be viewed as
the overall combination, or putting it in the language of the statutethat we
must consider the subject matter sought to be patented taken as a whole. With
this position, taken in the abstract, there is, of course, no quibble. But the
history of the prosecution of the Scoggin application in the Patent Office
reveals a substantial divergence in respondent's present position.
69
70
Moreover, those limitations were specifically spelled out as (1) the use of a rib
seal and (2) an overcap whose lower edge did not contact the container cap.
Mellon was distinguished, as was the Darley patent, infra, n. 18, on the basis
that although it disclosed a hold-down cap with a seal located above the
threads, it did not disclose a rib seal disposed in such position as to cause the
lower peripheral edge of the overcap 'to be maintained out of contacting
It is, of course, well settled that an invention is construed not only in the light of
the claims, but also with reference to the file wrapper or prosecution history in
the Patent Office. Hogg v. Emerson, 11 How. 587, 13 L.Ed. 824 (1850);
Crawford v. Heysinger, 123 U.S. 589, 8 S.Ct. 399, 31 L.Ed. 269 (1887). Claims
as allowed must be read and interpreted with reference to rejected ones and to
the state of the prior art; and claims that have been narrowed in order to obtain
the issuance of a patent by distinguishing the prior art cannot be sustained to
cover that which was previously by limitation eliminated from the patent.
Powers-Kennedy Contracting Corp. v. Concrete Mixing & Conveying Co., 282
U.S. 175, 185186, 51 S.Ct. 95, 99, 75 L.Ed. 278 (1930); Schriber-Schroth
Co. v. Cleveland Trust Co., 311 U.S. 211, 220 221, 312 U.S. 654, 61 S.Ct. 235,
239240, 85 L.Ed. 132 (1940).
72
Here, the patentee obtained his patent only by accepting the limitations imposed
by the Examiner. The claims were carefully drafted to reflect these limitations
and Cook Chemical is not now free to assert a broader view of Scoggin's
invention. The subject matter as a whole reduces, then, to the distinguishing
features clearly incorporated into the claims. We now turn to those features.
73
As to the space between the skirt of the overcap and the container cap, the
District Court found:
74
'Certainly without a space so described, there could be no inner seal within the
cap, but such a space is not new or novel, but it is necessary to the formation of
the seal within the hold-down cap.
75
'To me this language is descriptive of an element of the patent but not a part of
the invention. It is too simple, really, to require much discussion. In this device
the hold-down cap was intended to perform two functionsto hold down the
sprayer head and to form a solid tight seal between the shoulder and the collar
below. In assembling the element it is necessary to provide this space in order
to form the seal.' 220 F.Supp. at 420. (Italics added.)
76
The court correctly viewed the significance of that feature. We are at a loss to
explain the Examiner's allowance on the basis of such a distinction. Scoggin
was able to convince the Examiner that Mellon's cap contacted the bottle neck
while his did not. Although the drawings included in the Mellon application
show that the cap might touch the neck of the bottle when fully screwed down,
there is nothingabsolutely nothingwhich indicates that the cap was
designed at any time to engage the bottle neck. It is palpably evident that
Mellon embodies a seal formed by a gasket compressed between the cap and
the bottle neck. It follows that the cap in Mellon will not seal if it does not bear
down on the gasket and this would be impractical, if not impossible, under the
construction urged by Scoggin before the Examiner. Moreover, the space so
strongly asserted by Cook Chemical appears quite plainly on the Livingstone
device, a reference not cited by the Examiner.
77
78
Cook Chemical insists, however, that the development of a workable shippersprayer eluded Calmar, who had long and unsuccessfully sought to solve the
problem. And, further, that the long-felt need in the industry for a device such
as Scoggin's together with its wide commercial success supports its
patentability. These legal inferences or subtests do focus attention on economic
and motivational rather than technical issues and are, therefore, more
susceptible of judicial treatment than are the highly technical facts often present
in patent litigation. See Judge Learned Hand in Reiner v. I. Leon Co., 285 F.2d
501, 504 (2 Cir. 1960). See also Note, Subtests of 'Nonobviousness': A
Nontechnical Approach to Patent Validity, 112 U.Pa.L.Rev. 1169 (1964). Such
inquiries may lend a helping hand to the judiciary which, as Mr. Justice
Frankfurter observed, is most ill-fitted to discharge the technological duties cast
upon it by patent legislation. Marconi Wireless Telegraph Co. of America v.
United States, 320 U.S. 1, 60, 63 S.Ct. 1393, 87 L.Ed. 1731 (1943). They may
also serve to 'guard against slipping into use of hindsight,' Monroe Auto
Equipment Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d 406, 412 (1964),
and to resist the temptation to read into the prior art the teachings of the
invention in issue.
79
However, these factors do not, in the circumstances of this case, tip the scales
of patentability. The Scoggin invention, as limited by the Patent Office and
accepted by Scoggin, rests upon exceedingly small and quite non-technical
mechanical differences in a device which was old in the art. At the latest, those
differences were rendered apparent in 1953 by the appearance of the
Livingstone patent, and unsuccessful attempts to reach a solution to the
problems confronting Scoggin made before that time became wholly irrelevant.
It is also irrelevant that no one apparently chose to avail himself of knowledge
stored in the Patent Office and readily available by the simple expedient of
conducting a patent searcha prudent and nowadays common preliminary to
well organized research. Mast, Foos & Co. v. Stover Mfg. Co., 177 U.S. 485,
20 S.Ct. 708, 44 L.Ed. 856 (1900). To us, the limited claims of the Scoggin
patent are clearly evident from the prior art as it stood at the time of the
invention.
80
We conclude that the claims in issue in the Scoggin patent must fall as not
meeting the test of 103, since the differences between them and the pertinent
prior art would have been obvious to a person reasonably skilled in that art.
81
82
83
84
The provision appears in the Constitution spliced together with the copyright
provision, which we omit as not relevant here. See H.R.Rep.No.1923, 82d
Cong., 2d Sess., at 4 (1952); DeWolf, An Outline of Copyright Law, p. 15
(Boston, 1925).
'Stable ownership is the gift of social law, and is given late in the progress of
society. It would be curious then, if an idea, the fugitive fermentation of an
individual brain, could, of natural right, be claimed in exclusive and stable
property. If nature has made any one thing less susceptible than all others of
exclusive property, it is the action of the thinking power called an idea, which
an individual may exclusively possess as long as he keeps it to himself; but the
moment it is divulged, it forces itself into the possession of every one, and the
receiver cannot dispossess himself of it. Its peculiar character, too, is that no
one possesses the less, because every other possesses the whole of it. He who
receives an idea from me, receives instruction himself without lessening mine;
as he who lights his taper at mine, receives light without darkening me. That
ideas should freely spread from one to another over the globe, for the moral and
mutual instruction of man, and improvement of his condition, seems to have
been peculiarly and benevolently designed by nature, when she made them, like
fire, expansible over all space, without lessening their density in any point, and
like the air in which we breathe, move, and have our physical being, incapable
of confinement or exclusive appropriation. Inventions then cannot, in nature, be
a subject of property. Society may give an exclusive right to the profits arising
from them, as an encouragement to men to pursue ideas which may produce
utility, but this may or may not be done, according to the will and convenience
of the society, without claim or complaint from anybody.' VI Writings of
Thomas Jefferson, at 180181 (Washington ed.).
'(A) machine of which we are possessed, might be applied by every man to any
use of which it is susceptible.' Letter to Isaac McPherson, supra, at 181.
'(A) change of material should not give title to a patent. As the making a
ploughshare of cast rather than of wrought iron; a comb of iron instead of horn
or of ivory * * *.' Ibid.
'(f) he did not himself invent the subject matter sought to be patented, or
'(g) before the applicant's invention thereof the invention was made in this
country by another who had not abandoned, suppressed, or concealed it. In
determining priority of invention there shall be considered not only the
respective dates of conception and reduction to practice of the invention, but
also the reasonable diligence of one who was first to conceive and last to
reduce to practice, from a time prior to conception by the other.'
The precursors of these sections are to be found in the Act of February 21,
1793, c. 11, 1 Stat. 318; Act of July 4, 1836, c. 357, 5 Stat. 117; Act of July 8,
1870, c. 230, 16 Stat. 198; Rev.Stat. 4886 (1874).
6
The corresponding provision in the preliminary draft was titled 'Conditions for
patentability, lack of invention' (italics added), Proposed Revision and
Amendment of the Patent Laws, Preliminary Draft with Notes, House
Committee on the Judiciary (Committee Print, 1950).
The sentence in which the phrase occurs reads: '(T)he new device, however
useful it may be, must reveal the flash of creative genius not merely the skill of
the calling.' At p. 91, 62 S.Ct. at p. 41. Although some writers and lower courts
found in the language connotations as to the frame of mind of the inventors,
none Hotchkiss specifically, and the reference to 'flash of creative genius' was
but a rhetorical embellishment of language going back to 1833. Cf. 'exercise of
genius,' Shaw v. Cooper, 7 Pet. 292, 8 L.Ed. 689; 'inventive genius,'
Reckendorfer v. Faber, 92 U.S. 347, 23 L.Ed. 719 (1876); Concrete Appliance
Co. v. Gomery, 269 U.S. 177, 46 S.Ct. 42, 70 L.Ed. 222; 'flash of thought,'
Densmore v. Scofield, 102 U.S. 375, 26 L.Ed. 214 (1880); 'intuitive genius,'
Potts v. Creager, 155 U.S. 597, 15 S.Ct. 194, 39 L.Ed. 275 (1895). Rather than
establishing a more exacting standard, Cuno merely rhetorically restated the
requirement that the subject matter sought to be patented must be beyond the
skill of the calling. It was the device, not the invention, that had to reveal the
'flash of creative genius.' See Boyajian, The Flash of Creative Genius, An
Alternative Interpretation, 25 J.Pat.Off.Soc. 776, 780, 781 (1943); Pacific
Contact Laboratories, Inc. v. Solex Laboratories, Inc., 9 Cir., 209 F.2d 529,
533; Brown & Sharpe Mfg. Co. v. Kar Engineering Co., 1 Cir., 154 F.2d 48, 51
52; In re Shortell, 142 F.2d 292, 295296, 31 CCPA (Pat.) 1062, 1069.
have some stabilizing effect, and also to serve as a basis for the addition at a
later time of some criteria which may be worked out.
'The second sentence states that patentability as to this requirement is not to be
negatived by the manner in which the invention was made, that is, it is
immaterial whether it resulted from long toil and experimentation or from a
flash of genius.'
9
10
11
In '811, where the shank was above the hinge plate, an upward movement of
the chisel forced the shank up against the underside of the rear of the upper
plate. The upper plate thus provided the fulcrum about which the hinge was
pried open. Because of this, as well as the location of the hinge pin, the shank
rubbed against the heel of the upper plate causing wear both to the plate and to
the shank. By relocating the hinge pin and by placing the hinge plate between
the shank and the upper plate, as in '798, the rubbing was eliminated and he
wear point was changed to the hinge plate, a member more easily removed or
replaced for repair.
12
13
'Q. * * * Do you regard the small degree of flex in the forward end of the shank
that lies between the pivot point and the point of spring attachment to be of any
significance or any importance to the functioning of a device such as 798? A.
Unless you are approaching the elastic limit, I think this flexing will reduce the
maximum stress at the point of pivot there, where the maximum stress does
occur. I think it will reduce that. I don't know how much.
The patent is U.S. No. 2,870,943 issued in 1959 to Cook Chemical Co. as
assignee of Baxter I. Scoggin, Jr., the inventor. In No. 37, Calmar is the
manufacturer of an alleged infringing device, and, in No. 43, Colgate is a
customer of Calmar and user of its device.
15
Our discussion here relates to the overcap seal. The container itself is sealed in
the customary way through the use of a container gasket located between the
container and the container cap.
16
'By the same reasoning, may it not also be said that if (the device) solved a
long-sought need, it was likewise novel? If it meets the requirements of being
new, novel and useful, it was the subject of invention, although it may have
been a sort step, nevertheless it was the last step that ended the journey. The
last step is the one that wins and he who takes it when others could not, is
entitled to patent protection.' 220 F.Supp., at 421.
The Prior Art.
17
While the sealing feature was not specifically claimed in the Livingstone
patent, it was disclosed in the drawings and specifications. Under long-settled
law the feature became public property. Miller v. Brass Co., 104 U.S. 350, 352,
26 L.Ed. 783 (1882).
The Invalidity of the Patent.
18
In addition to Livingstone and Mellon, the Examiner cited Slade, U.S. Patent
No. 2,844,290 (hold-down cap for detergent cans having a pouring spout);
Nilson, U.S. Patent No. 2,118,222 (combined cap and spout for liquid
dispensing containers); Darley, Jr., U.S. Patent No. 1,447,712 (containers for
toothpaste, cold creams and other semi-liquid substances).